Federal Circuit: To Satisfy the Written Description Requirement, a patent “must at least describe some species representative” of the accused product.

This decision is important in the way that it confirms a strong Post-Ariad Written Description requirement – especially with regard to genus-species claim situations. The decision also includes a key (but preliminary) discussion on the preclusive effect of PTAB decisions and also attempts to justify Federal Circuit decisions that extend beyond questions necessary for the judgment. Hal Wegner has already classified this opinion – written by Judge Lourie – as “unnecessary judicial activism.”

In 2013, Abbot Labs spun-off AbbVie as a separate company with a focus on biopharmaceutical research and a current Market Cap of $90 Billion US (ABBV). In the split, AbbVie obtained ownership of a number of valuable patents. In this case, AbbVie asserted various claims of U.S. Patent Nos. 6,914,128 and 7,504,485. These patents broadly cover antibodies that can bind to and neutralize activity of human interleukin 12 (IL-12). These antibodies have been found useful in the treatment of autoimmune disorders, including psoriasis and rheumatoid arthritis.

A key asserted claim is listed as follows:

29. A neutralizing isolated human antibody, or antigen-binding portion thereof that binds to human IL-12 and disassociates from human IL-12 with a Koff rate constant of 1×10−2s−1 or less, as determined by surface plasmon resonance.

A jury found the claim invalid for lacking a sufficient written description, lacking enablement, and also for obviousness. AbbVie appealed the §112(a) claims (WD & enablement) and, as for obviousness, AbbVie argued that that issue should never have been decided by the district court since it had already been fully litigated during the prior interference contest. On appeal, the court affirmed – agreeing that the patent was properly held invalid for lack of written description and that the collateral estoppel did not apply to the obviousness question because the interference proceeding was not sufficiently “final” at the time of the complaint filing.

Written Description: In Ariad, the Federal Circuit confirmed that the written description requirement is separate and distinct from that of enablement and that it serves an important role of ensuring that the patent is based upon an actual describable invention and that the patent scope does not overreach beyond the scope of the inventor’s contribution.

Written Description– Genus-Species: By design, patent claims generally cover a set of a variety of potential embodiments. Likely, most claims cover an infinite variety of potential embodiments each involving a minor tweak in one way or another. The courts have never required that all potential embodiments be disclosed – however, the written description doctrine has been applied to invalidate patent claims that do not disclose a sufficient representative sample of embodiments. This is generally known as part of a genus-species problem – with the operative question here being how many different species (embodiments) of an invention must be described in a patent document before the applicant can properly claim rights to the genus of all related species. A key case on point is Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559 (Fed. Cir. 1997) (Lourie, J.) that was also affirmed in Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1355 (Fed. Cir. 2010) (en banc; Lourie, J.) (“[No] bright-line rules govern[] the number of species that must be disclosed to describe a genus claim, as this number necessarily changes with each invention, and it changes with progress in a field.”). Rather than simply listing various embodiments, the usual approach is to also describe common structural features of the species.

Here, AbbVie’s generic claim can be classified as a set of human antibodies defined functionally by their high affinity and neutralizing activity to the human IL-12 antigen. However, AbbVie did not disclose any structural features common to the members of the genus. Rather, AbbVie’s patent described only one type of structurally similar antibodies rather than antibies representative of the full scope of the genus.

In the decision, Judge Lourie focuses particularly on the alleged infringing antibodies and notes that:

[While] AbbVie’s patents need not describe the allegedly infringing [compound] in exact terms . . . [t]he patents must at least describe some species representative of antibodies that are structurally similar to [the accused compound].

Because the patent document lacked any such structural description, the court confirmed that the corresponding claims were invalid under 112(a).

Functional Patent Claims Are Inherently Vulnerable: In discussing the case, Judge Lourie was clear that one problem here is that the invention was described in terms of its function rather than its structure. Lourie writes:

Functionally defined genus claims can be inherently vulnerable to invalidity challenge for lack of written description support, especially in technology fields that are highly unpredictable, where it is difficult to establish a correlation between structure and function for the whole genus or to predict what would be covered by the functionally claimed genus.

With functional claims, the patentee must establish “a reasonable structure-function correlation” either within the specification or by reference to the knowledge of one skilled in the art. Of importance, the court is clear that functional claim limitations are patentable, but, in order to be patentable, they must be linkable to structure by PHOSITA. An interesting distinction though is that, unlike many written description issues, the linkage between the function and structure need not necessarily be found in the patent document itself.

Patent attorneys will also note that Judge Lourie’s reference to “highly unpredictable” arts is designed to refer primarily to bio-related sciences. We shall see whether the subsequent case law is so limited.

= = = =

Collateral Estoppel applies to preclude a court from re-deciding issues. Generally collateral estoppel only applies when the same issue was actually litigated and decided by a final and binding judgment in a way that was essential to the judgment. It is also generally true that collateral estoppel applies even when the first case is still pending on appeal – so long as the original court’s judgment was a final judgment being appealed.

Here, a prior interference proceeding between the parties had resulted in a determination that the AbbVie claims were not-obvious. Following the PTAB interference decision, Centocor filed a civil action under 35 U.S.C. § 146 that was pending at the time the present infringement litigation began. In the present appeal, the Federal Circuit held that the PTO decision should not be considered a “final judgment for the purposed of collateral estoppel” since the district court decision was still pending and during that case the parties have the opportunity to expand the factual record. The court left open the possibility that collateral estoppel would apply once the decision is final and that collateral estoppel may have applied if Centocor had appealed directly under § 141 instead of filing a civil action.

= = = =

Because AbbVie did not appeal the substance of the obviousness question, the collateral estoppel question fully decided the case. However, in its decision, the court offered an explanation for its reasons for going ahead and deciding the written description question.

AbbVie did not substantively challenge the district court’s holding of obviousness of the asserted claims. It might therefore be concluded that we could affirm that court’s obviousness holding and proceed no further. However, as an “inferior” court, we are well-advised to review more than one issue raised before us on appeal, lest higher authority find error in any basis for a more limited review. Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 97–98 (1993) (“[T]he Federal Circuit is not a court of last resort. . . . [Its] decision to rely on one of two possible alternative grounds (noninfringement rather than invalidity) did not strip it of power to decide the second question, particularly when its decree was subject to review by this Court.” (emphasis in original)); see also Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356 (Fed. Cir. 2012) (affirming invalidity based on anticipation and obviousness); Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325 (Fed. Cir. 2010) (same); Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684 (Fed. Cir. 2001) (affirming invalidity based on indefiniteness and lack of enablement). Because the written description issue constituted the principal basis of AbbVie’s appeal to this court, we proceed to consider the written description issue rather than affirm merely on any procedural defect or omission relating to the obviousness issue.

In her concurring opinion, Judge O’Malley did not sign-on to the “thoughtful written description analysis” of the majority – finding it not “necessary or dispositive ot the outcome of the case.”

455 thoughts on “Federal Circuit: To Satisfy the Written Description Requirement, a patent “must at least describe some species representative” of the accused product.”

I want to compare in this thread the +ve US requirement for WD with the -ve EPC requirement for “no added matter”. From what I have learned last week, here and in Munich, these two are now converging. And anyway, drafters have to draft now for what the courts will be holding, 15 years into the future.

Let’s take a real example for discussion (because I find Ned’s “genus” and “species” terminology not particularly helpful).

Your Client B supplies GM with aluminium alloy sheet with which GM makes car body panels. It press forms them soft, then paint bakes them. Precipitation hardening (as a result of diffusion of the alloying elements through the crystal lattice ) initiated by the paint bake, makes the panels hard. Beautiful!

B finds out that a particular range of alloy composition works best, but if discovers more. If you take care to arrange a particular stoichimetric ratio of the Mg and the Si content, you get an optimal paint bake response. It so claims and files.

Unbeknown to your client, competitor A had already filed. But A has not spotted the ratio invention and none of his Examples lies inside the range claimed by your client B in its dependent Claim 3.

Unbeknown to both A and B, but found by the EPO search, a Research Paper “RP” read to an earlier conference in Japan destroys the patentability of A’s claims as filed (and B’s claims 1 and 2) . But, again, it did not spot the ratio point and none of its Examples lie inside B’s Claim 3.

OK. B can get Claim 3. But what can A get a) at the EPO and b) at the USPTO?

Specifically, can A get through to issue with a claim narrow enough to be patentable over RP while still wide enough to cover some or all of the useful ground where the ratio is satisfied. Would it make a difference if A, accidentally, has a worked example that falls within B’s Claim 3?

This is one reason why the EPO is so strict about what it calls “undisclosed intermediate limitations”. The application by A presented all its Examples as equally good. B. by contrast, told us that examples within its Claim 3 perform better than examples within the wider range of its widest claim, Claim 1. B now covets the narrower better range and wants a claim to that range. Can it get there?

Is the USPTO going to get increasingly strict with prosecution amendments to undisclosed intermediate limitations? Or is it perhaps already as strict as the EPO in this regard?

Seems like you are aiming for a new use of an old disclosed item with your initial setup for B and claim 3.

I am confused though as to why you would ask: “Would it make a difference if A, accidentally, has a worked example that falls within B’s Claim 3?”

First, the adjective of “accidentally,” not sure what meaning you are aiming for by so describing A’s conscience choice of the inclusion. Second, are you trying to say that an applicant does not possess all that is inherently present in a possessed item?

Try not to be so easily distracted. If you don’t know the answers to my questions, it is OK to merely say so. Feigning greater expertise (“meat and drink”) while not actually answering the points raised paints you as a rather pompous @$$.

Quick tip, MD, when presenting a hypo: try to present the relevant facts before your asking your question. Here you asked “what can A get a) at the EPO and b) at the USPTO?” without telling us anything about what A described in its application!

If you have a question about “selection inventions”, set up the hypothetical with the essential facts and then ask the question.

Is the USPTO going to get increasingly strict with prosecution amendments to undisclosed intermediate limitations?

Many Examiners are already appropriately strict on this point — just as strict as the EPO. One’s mileage varies depending on any number of random factors. The ultimate question is whether one’s reliance on an “undisclosed intermediate limitation” in a claim is misplaced such that one ends up spending a lot of money to obtain and enforce a patent claim that blows up in one’s face when challenged by the defendant or some other third party.

Max, if you don’t disclose a sub-range at all, there is no possibility of claiming it in United States.

Secondly, even if you have an example with in a sub range with unexpected results disclosed by someone’s later application, you have to disclose that the criticality otherwise all examples would be deemed equivalent and obvious.

But you never know whether you can use A’s later application disclosing criticality as evidence in your own application/patent. This seems to be a growing practicing United States to allow post-filing expert affidavits to support patentability/validity.

you never know whether you can use A’s later application disclosing criticality as evidence in your own application/patent. This seems to be a growing practicing United States to allow post-filing expert affidavits to support patentability/validity.

My hope is that the “right case” is going to come along soon and expose the CAFC’s shallow and, frankly, bizarre position on the submission of post-filing evidence of previously undisclosed unexpected results to support the non-obviousness of a claim. Until then, applicants will undoubtedly take advantage of the absurd opportunity, even if enforcement against a competent defendant willing to go to the mat is virtually impossible.

“post-filing evidence of previously undisclosed unexpected results to support the non-obviousness of a claim”

is it that of the CAFC en banc, or is it just one particular panel within the CAFC?

just in case anybody points out in response that the EPO does allow post-filing evidence and expert affidavits, I should say that it does that only in support of effects announced in the application as filed. Effects announced by Applicant for the first time after filing and after seeing from the EPO search report that the prior art is closer than he had hitherto supposed cannot contribute to patentability, and post-filed evidence of their existence is not admitted.

Reading only the title, and sure that the (currently available) 355 odd comments have likely already thrashed this out, it sounds like this should pretty much kill most software/app patents, assuming it holds.

>To be clear, having one guy dismiss the consensus of hundreds of the world’s top >climate scientists as “hocus-pocus science” wasn’t the “balanced” thing to do, >and the only reason why people like Carter continue to be taken seriously is >because news networks continue to suggest they should be.

We need to treat Lemley and company the same way. Stop letting the academics voice their judicial activist views as if they are actually fair interpretations of the law and not law deniers.

Plurality of TU: Functional recitation in computer-based claims are really just method claims in disguise, and the species are really just routine ways in which any ordinary programmer would choose to write the needed code.

They aren’t “just method claims in disguise”.

The claims you refer to protect not only the nearly infinite number of “routine ways” of writing the code that “configures” the “new” computing machine, but also every one of the equally vast “non-routine” ways of writing that code, for all computing platforms, for the next 20 years. In this sense, these faux-method claims are indistinguishable from a claim that most applicants would rather not file as it would expose the farce: “I claim all methods of configuring a computing machine to achieve the functionality recited in claim 1, without describing a single specific example of such a machine in any terms except functional terms.”

Now, the s0ftie w0ftie types will whine that any composition claim protects all methods of making it, so what is the problem? The problem, of course, is that in the grown-up arts these composition claims recite structure that distinguishes them from the prior art or else they fail the written description test and, in most every case, some evidence of unexpected results must be provided. For years the most glaring exception to these requirement was the so-called “antibody exception” (the term “exception” being somewhat important as it recognizes that a general rule is being broken). How’s that “exception” doing these days?

My comment #20 set off an interesting discussion about 35 USC 112 and 132.

To stimulate the discussion further, I would like to point out that those who draft have to anticipate what the courts will be saying about validity fifteen years (or so) into the future. We get paid for divining as best we can, out of inter alia current caselaw, what the courts will make of our drafting, 15 years on from now.

You can say that no jurisdiction pays any attention to any other jurisdiction but it is my experience over 40 years that there is an accelerating trend for judges to be influenced by forceful legal thinking in other jurisdictions. Why, Randy Rader was always over here in Europe, telling us how to do (and how not to do) patent law. Presumably he thought the effort worthwhile.

So, with the shift to First to File, which dictates that priority is decided exclusively on the content of the appln as filed, and with the increasing prevalance of priority contests between rival corporate filers who independently file on much the same matter at much the same time, I do foresee an increasing emphasis on the importance of a written description, in the application, as filed, of the precise subject matter of the specific claim at bar. Otherwise,the patent goes not to the first filer but to the later filer, who learns from the earlier filer’s 18 month A publication what he should have claimed, and then claims it himself, during his own prosecution.

In other words, convergence of WD law with EPO practice, that often finds claim amendments made during prosecution, ones that lack written description support, to be not in conformity with the European statute.

It’s beyond dispute, my forecast, isn’t it? If so, for the good of your clients 15 years down the line, think about drafting European-style. You can do it, even without profanity.

Max, since you do not have a 103 operating from the moment of filing of a patent application reference, you have to do this “priority” dance. That cannot happen in the US given 103.

A second filer cannot claim subject matter disclosed in the first filer’s application, or even obvious variations of it. There really cannot be a priority contest in the US that is at all like what appears to be going on in Europe.

Ned you make a good point, that US patent law allows obviousness attacks based on the disclosure content of patent applications filed before the claim but not published till after the date of the claim, whereas the EPC doesn’t. It makes a difference, sure.

But we need to distinguish between what an application discloses and what a claim covers. I am envisaging the first filer realising for the first time when he sees 2nd filer’s A publication what his claim ought to have covered, and then in prosecution striving by claim amendment to get to a claim, even a narrow one, that includes within its ambit that non-obvious and commercially valuable subject matter.

Such an amended claim will likely be quite a bit narrower than the as-filed claims, because first filer wants a claim that covers the competitor but is robust against attacks both novelty and obviousness. The situation I envisage is when first filer lacks a “written description” of the subject matter of that narrow claim and, for that reason, ought to be prevented from getting behind the later filer, with a valid claim which covers that commercially important invention.

Since PHOSITA (to which you are measuring) is a construct anyway, how does the non-construct actual second inventor not seeing the filed but not published work change the “state of the art” for obviousness purposes?

Does this not mirror the existing notion that PHOSITA has god-like access and memory of all prior art?

Second

Does not your response of “realising for the first time when he sees 2nd filer’s A publication what his claim ought to have covered, and then in prosecution striving by claim amendment to get to a claim, even a narrow one, that includes within its ambit that non-obvious and commercially valuable subject matter.” contradict your own posts in relation to another’s ABCDE//ABCD and N-1 conversation?

Of course, careful drafting includes drafting with fall back positions (with the specification mirroring the claim construction of with fallback claim structure in the proper dependent claims), so for already careful drafters, does your concern add anything not already known?

“You can say that no jurisdiction pays any attention to any other jurisdiction”

I am aware of no one that says such.

I am very much aware of people intimate with the law, with an understanding of sovereignty, that say that judicial activism that goes beyond one country’s laws and “borrows” from another’s is ultras vires. The difference between “does” and “should do” is rather important. At least in the states, the one branch (the only branch) of government delegated to have authority to write patent law is not the judiciary.

“Otherwise,the patent goes not to the first filer but to the later filer, who learns from the earlier filer’s 18 month A publication what he should have claimed, and then claims it himself, during his own prosecution.”

Hmm, not so much. At least in the U.S. Here, given the exceedingly thin protection afforded by the new 102, neither party likely gets the “should have claimed.”

In fact, for those unfortunate to depend on ANY publication prior to filing to afford protection, any publication of obvious variant – or attempted filing of such – also results in neither party obtaining patent coverage – of the as claimed or even the “should have claimed.”

“It’s beyond dispute, my forecast, isn’t it?”

A broken analog clock is right twice a day – don’t strain yourself attempting to pat yourself on the back.

“even without profanity”

Would that be “blog profanity” or “patent profanity,” as there is an appreciable difference, and the latter is a moving target based on the court’s disdain for “scriviner’s” and their addiction to 101-nose-of-wax-like patent law writing. The earlier category should not serve as a distraction and is certainly not advantageous to the distinction between actual conversation and the ability tto post whatever in a noncritical soapbox style.

A further thought to “Otherwise,the patent goes not to the first filer but to the later filer, who learns from the earlier filer’s 18 month A publication what he should have claimed, and then claims it himself, during his own prosecution.”

That which is not prevented a patent under the law (under obviousness) is fully and rightfully an invention of another – deserving to go to whomever files on the improvement thusly invented. MaxDrei (as typical) posts with an assumption in mind without really thinking through what he is trying to say.

The more interesting question is what is the dividing line of protection for earlier patents against later improvements that do not rise above the “obviousness” bar.

Again, I refer readers to the words of the KSR decision:
“Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.” 550 U. S. ____ (2007) at 15

Ask yourselves, what exactly is meant by depriving prior inventions of their value?

This little phrase is often simple overlooked by those with an anti-patent world view. An objective view would not so easily dismiss the comment, and a wise and counter-intuitive reading would reveal that with a mindset of strengthening patent rights (instead of attempting to weaken them), this phrase would lessen the impact of “too easily granted” patents in view of prior granted patents (but one would necessarily have to have a view of a stronger doctrine of equivalents – a view the anti-patentists seem to choke on).

I find it interesting that no one seems eager to contemplate the patent-strengthening aspect of the KSR decision that I point out.

Of course, there is another “strengthening” aspect that accompanies the decision, that likewise, anti-patentists desire to ignore as to its inconvenient truth: KSR directly leads to a shallowing of patent applications and a proliferation of functional claiming being legitimate.

How can that be? One may wonder. Ah, the wonderful world of unintended consequences. Remember my friends, the double edged sword of PHOSITA. Remember as well, that a patent applicant does NOT have to include in the application that which is known to PHOSITA.

I have written previously how the holding of Alappat (stipulated to by both parties in the Alice case, btw, and thus beyond the effects of the decision in that case) provide that software as a machine component does create a new machine that satisfies the category portion of 35 USC 101 – it is afact of the Alice case that the machine category requirement was PROPERLY met (and before anyone gets their undies in a bunch, yes one does have to satisfy more than just the category portion, as the takeaway from Alice show that the Judicial Exceptions apply regardless of category – much to the chagrin of the likes of Ned and Malcolm).

Given that the TYPE of change that software imbues is understood by PHOSITA, applicants simply need not repeat (nor depend upon to satisfy 112) the understood TYPE of change in their applications.

This can be reflected in the improper understanding of the exceptions to the judicial doctrine of printed matter than both DanH/Leopold and Malcolm exhibited in their past discussions of the matter: the functional relationship itself (of the exception) NEED NOT be inventive in its own right to allow for use of the patentable weight of the printed matter as part of a typical claim – a claim which MUST be read in the shoes of a Person Having Ordinary Skill In The Art to which the invention pertains, that person having been informed by the specification.

You see, the PHOSITA already recognizes – and accepts – the patentable weight based on the TYPE of functional relationship. That’s the true beauty of recognizing the difference between Set C printed matter that has the functional relationship (the function existing outside of the human mind – See anthropomorphication) and Set B printed matter that lacks such outside-the-mind functional relationship. Unfortunately, there are those who wish to dissemble and clench tight their eyes to this very real legal difference. Some regular posters pursuing their agendas will refuse to recognize (or comment upon directly) the clear Set Theory based explanation of the judicially created doctrine of printed matter and the realization and correction of that judicially created doctrine, pretending that the judicially created doctrine is actually found in the words of the statute (when clearly no such words are present).

Another way to put this, is to put it colloquially: software works. Software is NOT something JUST in the mind, as software works to effectuate an actual physical change outside of the mind – a change in the machine (an appropriate tie-in to anthropomorphication fits here) really does happen. If software were ONLY something purely in the mind, we would need telekinesis (or magic) to make software work. We do not, so no matter how much dust is attempted to be kicked up, one only needs to point to the reality of this physical world and note that software does NOT work by telekinesis or magic. Something very physical does happen.

Returning from the wetting down of the dust to prevent dust-kicking, and back to the strengthening aspect and unintended consequences: The Justices are known to have anti-patent tendencies (history repeats and we do see repetition of the pre-1952 judicially active waywardness). In their decision to strengthen PHOSITA in KSR, the justices may have inadvertently strengthened the ability of scriviners to provide thinner and less robust applications. This is because a stronger PHOSITA NEEDS less to understand the claims, and applicants mirror this strengthening of PHOSITA with an EQUAL lessened NEED to include material in the application.

Team Inventor (Yay Lemley) may DE FACTO include PHOSITA in the software arts that know and understand the TYPE of purely legally accepted functionally-related printed matter that allows patentable weight to software, and such NEED not be re-presented in applications in the art to which such inventions pertain. Team Inventor already possesses this aspect of the invention, and because the Court was so gracious as to expand the power of PHOSITA, Team Inventor needs less in his ongoing applications to meet the legal requirements. This does create a mirage that “functional claiming” is getting out of control, but any mirage is simply dissipated by a recognition of how to properly read claims, and the critical importance of the legal requirement to so read claims “in the art to which the invention pertains.”

Thanks Court. Your intended actions to weaken patents have had a deliciously ironic effect of permitting “weaker” patents to more easily meet the legal requirements. Just as would a decision being more forthright pro-patent and directly strengthening the effect of the doctrine of equivalents to weed out later possibly equivalent patents, so too, a Court decision constraining the power of PHOSITA would have had less of a “deleterious” effect of shallowing out what Team Inventor needs to actually include in patent applications and would have (possibly) stemmed the acceleration of (proper under the law) use of functional descriptions in claims.

I know right? I mean his newest fantastic story is hilarious and all but I mean, come on. Trying to pull all this supposedly “pro-patent” stuff out of his quote from KSR is just coo koo. Set all the rest of the whoppers aside and you still have plenty of funny left in there.

“Ask yourselves, what exactly is meant by depriving prior inventions of their value?”

Oh, I didn’t realize that was the only “question” that you were attempting to address in your short story.

Sure I’ll “address” that. The question is easy. When you allow party B a patent on a obvious advance over party A’s previously patented invention you sometimes decrease the value of A’s patent since anyone looking to license his will likely also wish to keep up with the latest obvious advances in tech and want to license B’s as well. That is a more expensive proposition and thus the person looking to license will be less likely to do the whole shebang, thus party A gets squat. Or, party B may well simply refuse the license where A would still go ahead with granting one, and thus the whole project may well get killed by B’s obvious patent thus, again, A gets squat.

And even the least harmful situation may see the value of A’s patent reduced by B’s because one looking to license A’s patent is not allowed free use of all the obvious variants of A’s invention since B has a patent on some of them. Thus the person looking to license knows they may well have to deal with party B in a separate transaction.

I thought you were supposed to be dat expert about these sorts of matters.

6, your propensity for wanting to be able to climb up on soapbox and say WHATEVER with no one taking any sense of critical evaluation of the content is well known.

If all you want to do is stick your fingers in your ears and clench tight your eyes while you chant the same mantra over and over again, you simply are not looking to engage in a conversation or discussion.

And your view on the value of the patent is more than just a little off.

“you simply are not looking to engage in a conversation or discussion.”

You are correct, I’m not looking to engage in a conversation or discussion on this matter you randomly drummed up out of the blue. I simply gave you my viewpoint because you egged me on, and to help a blatant ignoramus out. Why you have such trouble grasping this I cannot fathom.

“And your view on the value of the patent is more than just a little off.”

Well of course it is Mr. OCPD! I’m entirely wrong! Don’t shy away from saying it outright! No need to beat around the bush. If you want to say “6 you’re wrong” don’t try to disguise it. You’ll be owning the truth in your mind regardless. And though it is good that you’re attempting to modify your behavior and stop outright saying “you’re wrong” and making what you say slightly more socially acceptable it is easy to see you’re still feeling the OCPD in your mind, owning that truth like a boss! And the overall effect, even with the different words, is the same in everyday convo.

But here’s one thing to consider, what I said isn’t really “my view” it’s just the viewpoint I’ve picked up from other USSC cases that is the USSC’s view on this subject, so tell them about it, not me ok? I did not mean to relay my views on the effects of patenting obvious stuff, I meant to relay my views on what the USSC was talking about when they made their comment. So there is no need to bother me about it. Your argument is with the people at the horse’s mouth that made the comment. I don’t necessarily think that issuing obvious patents diminishes the value of the earlier patent all that much myself in real life situations. It can, surely, but it prob doesn’t irl like 99% of the time. And it no doubt would if we went patenting crazy on obvious stuff (which I think is what their comment is about, a hypo where everyone is patenting obvious stuff all the time). But today we don’t really have that problem irl due to examination.

In any event, their comment really was a simple throw away line it did not have some profound “elephant hiding in a mousehole” meaning.

It’s a pretty soapbox that you have. Too bad you don’t want to discuss this (and yes, I understand that you are “sensitive” to have your views shown for the lack of critically thinking hot mess that they are – as you only wish to post in your widdle world of “lawl as subjective in the mind anything goes” so you won’t have to face the fact of how very often your spouting on law is simply – and objectively – wrong. I get that you are afraid of any substantive “convo” on the merits, and only wish to run away in abject denial.

Right, I don’t want to talk to Mr. OCPD about his pet topic of the day where he’s already signaled that he’s looking for a confrontation with his right/wronging and it’s all because I’m sooooo afeared of being shown to be wrong via Mr. owner of all Truth bringing “critical analysis” and “objective facts/reasoning” to the table! I’m soooo afeared!

LOLOLOL!

Do you even hear yourself talking?

How many people do you know that really want to have a “conversation” i.e. “conflict”, with someone actively looking for a conflict, and who already pretty much started one, over some throw away line in a court case?

Seriously. How many? Like 50? 100? One? ZERO? Oh wait, yes! ZERO!

“Social t ard” doesn’t even begin to capture the sheer social re ta rdation on display brosef so I won’t even bother to call you that.

It is amazing how you’ve convinced yourself that people not wanting to talk to you is because they’re afraid of all the truth that you own. Nah brosef. It’s because you’re owning the truth in the first place. Not because of the truth that you own.

Newsflash! Determining whether or not we want to talk to you is a social matter, not a matter of some intellectual topic.

And besides that we could give two shts less about the content of the truth that you own, for the purposes of determining whether or not to talk to you. And that’s because unlike you we can correctly determine that the vast vast vast majority of the truth that you own is simply your opinion on “OCPD steroids”. And even if your opinion is on steroids, it’s still just an opinion and everyone’s got one.

anon, it is shocking that this whole rant of yours mightily exhibits your profound lack of understanding of the cases behind the printed matter doctrine. That doctrine looks to the novel aspects of the claim to see if such is statutory.

We all know that software is functional. The question is whether the novel aspects of the new software are functional to produce an improved computer or larger process or machine.

If not, the novel aspects of the claimed subject matter is non statutory.

For all of your protests Ned, you have yet to this day provided any reasoning to back up your VERSION of the case law you so badly mangle, nor do you address ANY of the simple Set theory explanation that I provided. Instead you merely mouth an empty conclusory statement of yours with no regard to the counterpoints put before you.

I can rub your nose in the case law all day long, and you will not budge.

One cannot educate the uneducatable. It is useless to even try.

The Supreme Court cart went off the rails with the Diehr dicta about novelty. It stayed there big time in Bilski when it ignored Stevens.

But with Prometheus/Alice, the Diehr dicta is dead. The analysis of Hotel Security and its progeny is restored.

One looks to the novel aspects of a claim to determine eligibility. The Supreme Court has only to go the last step and actually look at the statutory language itself to complete its journey back from the wilderness. It uses the term “abstract” to describe that which is “non statutory.” But that is a distinction without a difference.

Your problem is that you have dedicated your life to support nominalism as enunciated by Rich in cases such as Benson, Bergy, the Alappat dicta, and profoundly in State Street Bank. Nominalism is not the law and has never been the law.

Billy: you have yet to this day provided any reasoning to back up your VERSION of the case law you so badly mangle,

As far as I can tell, Ned (like most people) seems to understand the reasoning behind Prometheus and similar decisions quite well. You can’t protect ineligible subject matter by dressing up your claims reciting ineligible subject matter with old, conventional steps or ancient information-processing apparati. The reason is that such claims still protect the ineligible subject matter. The fact that the protection is relevant to a diminished class of potential defendants is beside the point.

nice non-sequitur Malcolm, but we are not talking about Prometheus here, nor your little pet theory and its boatload of holes.

We are talking about the exceptions to the judicial doctrine of printed matter. You know the one, the one you volunteered an admissions against interests as to knowing what the controlling law is and what that law means.

Your pet theory [oldstep] can be granularized into multiple [oldsteps]…

Your FAILURE to account for the fact that multiple [oldsteps] and a [newthought] can be both patent eligible and patentable (since, as you yourself have volunteered an admission that mental steps – as part of a claim – are fully allowed under the law.

You know, this is just one of the several things with your zombie pet theory that you ignore in raising your zombie.

…highlight the fact that your pet theory uses a de facto assumption that the claim elements are not integrated.

Also lost in your rants being expunged was the reply highlighting three or four other major faults with your zombie pet theory that you never seem to want to clarify. What remains of your pet theory is an excessively banal proposition of a mere appended thought, non-integrated and tacked onto a claim resulting in a claim being not eligible. But even a claim element, completely claimed in structural terms merely tacked on and not integrated also fails (such as a claim to a bicycle and a goldfish in a copper bowl) – thus the crux of your little pet theory and your advocacy falsely centers around the mental step portion.

Your pet theory does not handle or address the fact that perfectly patent eligible and patentable claims can have elements in the claim that are mental steps, and such steps can carry patentable weight. This has been highlighted many times when you strawman a discussion and move the goalpost to talking only about claims completely in the mind and never get back to discussing claims not completely in the mind, but having only a portion completed in the mind.

Your pet theory does not handle or address the fact that perfectly patent eligible and patentable claims can have [oldstep]+[oldstep] configurations, let alone [oldstep]+[newthought]+[oldstep] configurations. This highlights the failure of your logic wanting to hold that “doing what is already allowed” is made infringement with but a thought, as clearly there are cases (with NO thought added) that doing a combination of things – already fully allowed – is NOT allowed.

You seem unable to comprehend these things, and you continue to advocate even when these things are brought to your attention. Your “pet theory” is shown to be nothing more than a zombie and you just don’t care.

Your pet theory [oldstep] can be granularized into multiple [oldsteps]…

Your FAILURE to account for the fact that multiple [oldsteps] and a [newthought] can be both patent eligible and patentable (since, as you yourself have volunteered an admission that mental steps – as part of a claim – are fully allowed under the law.

You know, this is just one of the several things with your zombie pet theory that you ignore in raising your zombie.

As can be seen at link to [second link to follow]

…highlight the fact that your pet theory uses a de facto assumption that the claim elements are not integrated.

Also lost in your rants being expunged was the reply highlighting three or four other major faults with your zombie pet theory that you never seem to want to clarify. What remains of your pet theory is an excessively banal proposition of a mere appended thought, non-integrated and tacked onto a claim resulting in a claim being not eligible. But even a claim element, completely claimed in structural terms merely tacked on and not integrated also fails (such as a claim to a bicycle and a goldfish in a copper bowl) – thus the crux of your little pet theory and your advocacy falsely centers around the mental step portion.

Your pet theory does not handle or address the fact that perfectly patent eligible and patentable claims can have elements in the claim that are mental steps, and such steps can carry patentable weight. This has been highlighted many times when you strawman a discussion and move the goalpost to talking only about claims completely in the mind and never get back to discussing claims not completely in the mind, but having only a portion completed in the mind.

Your pet theory does not handle or address the fact that perfectly patent eligible and patentable claims can have [oldstep]+[oldstep] configurations, let alone [oldstep]+[newthought]+[oldstep] configurations. This highlights the failure of your logic wanting to hold that “doing what is already allowed” is made infringement with but a thought, as clearly there are cases (with NO thought added) that doing a combination of things – already fully allowed – is NOT allowed.

You seem unable to comprehend these things, and you continue to advocate even when these things are brought to your attention. Your “pet theory” is shown to be nothing more than a zombie and you just don’t care.

Your pet theory does not handle or address the fact that perfectly patent eligible and patentable claims can have [oldstep]+[oldstep] configurations, let alone [oldstep]+[newthought]+[oldstep] configurations.

I’ve explicitly responded to this b.s. from you so many times already it makes me f ing puke.

What remains of your pet theory is an excessively banal proposition of a mere appended thought, non-integrated and tacked onto a claim resulting in a claim being not eligible.

Since you still seem to be struggling a bit, I’ll just note that there are no examples of “new thoughts” that “integrate” with an old data gathering step such as to result in an eligible claim that legally prevents data gatherers using that old step from thinking the new thought. Whatever additional limitations are necessary to achieve such an “integration” of ineligible thoughts with old data gathering steps, we can all rest assured that they aren’t going to be additional “new thoughts” or additional “data gathering steps.”

If you think this proposition is “banal”, well, you’ve just finally acknowledged what I’ve been asking you to acknowledge for 4 or 5 years now. Now, apparently, you can easily understand why Prometheus was a tight 9-0 case and why it will never, ever be overturned.

I’m not sure if I should light some fireworks to celebrate just yet as I’m pretty sure you’re going to retreat from your admission about the banality of my “theory” (again: just a basic, banal fact) back into your sad fantasy world where your zombie Diehrbot dreams remain uncrushed. You’ll recall you spent countless paragraphs whining about how my now admittedly “banal” “theory” was somehow precluded by an alleged prohibition against “claim dissection” in Diehr.

Oops Readers (Ned, anon). Sorry about that. In the above, I wrote it the wrong way round. I corrected the priority contest situation in my later reply to Ned.

What happens is that first filer realises belatedly, from the later-filer’s 18 month A publication, what was not obvious to him and what he should have claimed, and then claims it for the first time during prosecution.

His belated claims, if OK, are entitled to his filing date, earlier than the other guy’s. But the other guy, the later filer, was actually the “First to File” on that particular novel and inventive subject matter, and so he should get the patent.

How to stop such mischief? The EPO uses the “new matter” Provision. The USPTO would have to use the “no WD” mechanism. It will. Increasingly. Mark my words.

Is there an assumption in your Hypo MaxDrei that the first filer, amending later does NOT have proper support (whatever that means ;-) ) for his later amendment, AND that the second filer (first claimer) has a claim that does pass the obviousness test over the first filer?

Are you assuming “mischief” where perhaps there is none (depending on the level of deference that could be given to the first filer)?

In the instance where second filer’s later first claimed item is NOT above the obviousness hurdle, are you assuming an absence of the typical boilerplate in patent applications that seeks to capture such obvious variants?

In the instance where the second filer’s later first claimed item IS above the obviousness hurdle are you neglecting that such a finding necessarily means that applicant one must add verboten new matter ( and clearly, new matter of a substantial level) in order to attempt to later claim the non-obvious advance?

In other words, have we circled around and come back to the exact same point that it is the new matter rule that governs, as opposed to the WD mechanism? (I am still waiting on word from Ned to verify where exactly in 112 the power to object to new matter and force the rescission of such new matter can be found. Surely, an examiner demanding an action under 112 that 112 does not provide for will not have his rejection sustained – the application of the proper point of law will triumph (even if that means Ned Heller has to eat crow).

The hypo requires that the A publication of the 2nd filer reveals to the world (including 1st filer) for the first time the commercially valuable embodiment X of inventive concept C (which at that level of generality turns out to lack patentability), and that 1st filer on concept C did not conceive, and so did not “possess”, when he himself filed for C at the PTO, earlier than 2nd filer. There is no disclosure of embodiment X in the specification of 1st filer, as filed.

Whether 2nd filer can get to issue with a not invalid claim directed to his embodiment X depends on the prior art, including the A publication of 1st filer.

Whether 1st filer can get to issue with a not invalid claim directed to X depends on the admissibility to the pending application of a claim specifically directed to X. Let’s talk with Ned, about the rules governing admissibility of such a claim to the pending application of 1st filer and whether any such claim, after admission, is still vulnerable to future attacks on it, commenced after issue, and concerning the legitimacy of its pre-issue admission to the proceedings.

The hypo requires that the A publication of the 2nd filer reveals to the world (including 1st filer) for the first time the commercially valuable embodiment X of inventive concept C (which at that level of specificity turns out to lack patentability), and that 1st filer on concept C did not conceive, and so did not “possess”, when he himself filed for C at the PTO, earlier than 2nd filer. There is no disclosure of embodiment X in the specification of 1st filer, as filed.

Whether 2nd filer can get to issue with a not invalid claim directed to his embodiment X depends on the prior art, including the A publication of 1st filer.

Whether 1st filer can get to issue with a not invalid claim directed to X depends on the admissibility to the pending application of a claim specifically directed to X. Let’s talk with Ned, about the rules governing admissibility of such a claim to the pending application of 1st filer and whether any such claim, after admission, is still vulnerable to future attacks on it, commenced after issue, and concerning the legitimacy of its pre-issue admission to the proceedings.

Sorry Ned, but without more, your statement is too broad and not correct.

A new embodiment may be added without a CIP if the embodiment merely reflects items already captured (and an appropriately written scriviner notification exists in the as-filed application noting that obvious variants are covered – fairly standard stuff, even for “amateurs”).

Of course, this does assume a point that I have asked MaxDrei to clarify: that X is below the bar of obviousness, or not.

In essence (still) the situation comes back full circle to my point of added matter.

And yes, you STILL have failed to back up your “professional” position on exactly where in 112 you are basing your examiner’s authority to request the change in the specification to be rejected.

Yes Ned, I appreciate that point. But that’s not what I’m driving at. Sorry I am not making myself clear.

What I envisage (and it happens more often than you might imagine) is an amendment only of the claim (not the specification) during prosecution.

Applicant (A) finds out during prosecution that his wide claims as filed are not viable, but such of his narrower claims that do survive the patentability search are no good because they don’t cover what the competitor (B) is doing.

He has also found out in the meantime what his competitor B is doing, namely “X”. He finds out either in the marketplace or by reading the A publication of B’s patent application, which was filed shortly after A’s own application. B’s patent application includes something on which A’s application is totally silent, namely cute and clever X, an embodiment of the common inventive concept C (to which broad concept both A and B have laid claim). Subject matter X is illustrated and individualized by B, in B’s specification, but is nowhere to be found in A’s earlier patent application.

So A sets about writing a claim (which would necessarily be entitled to A’s filing date) that is i) narrow enough to be patentable over the prior art yet ii) wide enough to embrace X.

In EPO terminology, such a claim, by A, to cover subject matter X, being patentable subject matter which A did not disclose, is an “undisclosed intermediate generalisation” and is found to offend Art 123(2) EPC.

In my experience, this very situation occurs not infrequently.

Question for you: Who should be able to get an effective (enforceable) patent for X? Should it be A, should it rather be B, should it be both of A and B or should it be neither of A and B? Which result best promotes progress in useful arts? Which result would it be at the EPO and which in the USA?

Yes Ned, I appreciate that point. But that’s not what I’m driving at. Sorry I am not making myself clear.

What I envisage (and it happens more often than you might imagine) is an amendment only of the claim (not the specification) during prosecution.

Applicant (A) finds out during prosecution that his wide claims as filed are not viable, but such of his narrower claims that do survive the patentability search are no good because they don’t cover what the competitor (B) is doing.

He has also found out in the meantime what his competitor B is doing, namely “X”. He finds out either in the marketplace or by reading the A publication of B’s patent application, which was filed shortly after A’s own application. B’s patent application includes something on which A’s application is totally silent, namely ingenious, cute and clever X, an embodiment of the common inventive concept C (to which broad concept both A and B have laid claim). Subject matter X is illustrated and individualized by B, in B’s specification, but is nowhere to be found in A’s earlier patent application.

So A sets about writing a claim (which would necessarily be entitled to A’s filing date) that is i) narrow enough to be patentable over the prior art yet ii) wide enough to embrace X.

In EPO terminology, such a claim, by A, to cover subject matter X, being patentable subject matter which A did not disclose, is an “undisclosed intermediate generalisation” and is found to offend Art 123(2) EPC.

In my experience, this very situation occurs not infrequently.

Question for you: Who should be able to get an effective (enforceable) patent for X? Should it be A, should it rather be B, should it be both of A and B or should it be neither of A and B? Which result best promotes progress in useful arts? Which result would it be at the EPO and which in the USA?

Yes Ned, I appreciate that point. But that’s not what I’m driving at. Sorry I am not making myself clear.

What I envisage (and it happens more often than you might imagine) is an amendment only of the claim (not the specification) during prosecution.

Applicant (A) finds out during prosecution that his wide claims as filed are not viable, but such of his narrower claims that do survive the patentability search are no good because they don’t cover what the competitor (B) is doing.

He has also found out in the meantime what his competitor B is doing, namely “X”. He finds out either in the marketplace or by reading the A publication of B’s patent application, which was filed shortly after A’s own application. B’s patent application includes something on which A’s application is totally silent, namely cute and clever X, an embodiment of the common inventive concept C (to which broad concept both A and B have laid claim). Subject matter X is illustrated and individualized by B, in B’s specification, but is nowhere to be found in A’s earlier patent application.

So A sets about writing a claim (which would necessarily be entitled to A’s filing date) that is i) narrow enough to be patentable over the prior art yet ii) wide enough to embrace X.

In EPO terminology, such a claim, by A, to cover subject matter X, being patentable subject matter which A did not disclose, is an “undisclosed intermediate generalisation” and is found to offend Art 123(2) EPC.

In my experience, this very situation occurs not infrequently.

Question for you: Who should be able to get an effective (enforceable) patent for X? Should it be A, should it rather be B, should it be both of A and B or should it be neither of A and B? Which result best promotes progress in useful arts? Which result would it be at the EPO and which in the USA?
:

In this thread there is an observation from 6 about the WD requirement having got more onerous in recent years. I predict that, with First to File, the trend will continue. That is because, when priority between rival independent Inventors is decided exclusively on the disclosure content of their respective filings at the PTO, a written description in their appln as filed, of what they respectively end up claiming, will become ever more vital to success in the priority contest.

Not so different from how the EPO treats “added matter”, and for the very same reason.

But when he asks a question that sets me thinking, I will assume it sets others thinking too. In that case, I want to keep those others (you, for example) engaged. It might result in my learning something.

So in that situation, I might well make an exception, and respond to his atypical post. It is not going to dilute the thread much, if at all.

If you find out, down the line, during examination on the merits, that your application as filed lacks (to the new raised standard of rigour)a “written description” of the subject matter you now want to claim, how does the USPTO stop you adding (by amendment) such a complementary beefed-up written description into the pending application?